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  • Blocking Patents in Prosecution Strategy and Corporate IP Strategy After Acorda

    Contains 5 Component(s), Includes Credits Includes a Live Web Event on 02/26/2020 at 2:00 PM (EST)

    The panel will include an in-house counsel at a leading medical device company and two veteran patent prosecutors. They will discuss what prosecution strategies will best protect such inventions if they are now more vulnerable, and whether such considerations should now impact corporate IP strategy and budgets.

    In its 2018 Acorda v. Roxane decision, the Federal Circuit addressed in detail the blocking patent doctrine, under which the potential deterrent effect of an earlier patent on subsequent innovation can discount or negate objective indicia of nonobviousness pertaining to a later invention. The decision was viewed as a threatening broadening of the doctrine by many in the pharmaceutical industry, where the doctrine developed in litigation.

     Last fall, the Supreme Court denied the petition for certiorari in the case. These two webinars will examine the impact of Acorda both within the pharma industry and without. The language of the decision leads some experts to believe the blocking patent doctrine enunciated in Acorda is applicable to any technology, and that the lengthy “Acorda factors” will soon join elder siblings like the Graham and Georgia-Pacific factors in patent lexicography.

     Depending on how courts react, Acorda raises many issues for patent prosecutors, notably how to protect inventions that represent an incremental improvement over existing patents.

    On Wed Feb. 26, in the second webinar of this series, the panel will include an in-house counsel at a leading medical device company and two veteran patent prosecutors. They will discuss what prosecution strategies will best protect such inventions if they are now more vulnerable, and whether such considerations should now impact corporate IP strategy and budgets.

    Speakers:

    Adriana Burgy, Finnegan

    Stephen Durant, Schwegman Lundberg & Woessner

    Jeffrey Hohenshell, Medtronic

    Adriana Burgy

    Finnegan

    is a partner at Finnegan. Her practice focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring patent portfolio strategy and development, with an eye towards litigation.

    Stephen Durant

    Schwegman Lundberg & Woessner

    is a registered patent attorney and a principal at Schwegman Lundberg & Woessner. He has drafted and prosecuted patents in a wide range of software and computer technologies. His practice is devoted to developing IP portfolios aligned with business goals and with enforcement and litigation strategy. Earlier, he was a partner at Wilson Sonsini and Morrison & Foerster.

    Jeffrey Hohenshell

    Medtronic, Inc.

    is a senior patent attorney at Medtronic. An experienced patent prosecutor and strategist, he has had success invalidating for double patenting several patents covering patient-monitoring systems that were asserted against Medtronic.

  • Blocking Patents in Litigation After Acorda: What’s Acorda’s Impact Inside and Outside of Pharma? (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 02/20/2020

    The panel will analyze whether Acorda is a game changer in Hatch-Waxman litigation; whether the lesser role of secondary considerations will relegate Acorda to the sidelines in high tech patent litigation and how the fact-specific inquiry required by Acorda will likely play out with discovery, expert testimony, and questions about the burden of proof.

    In its 2018 Acorda v. Roxane decision, the Federal Circuit addressed in detail the blocking patent doctrine, under which the potential deterrent effect of an earlier patent on subsequent innovation can discount or negate objective indicia of nonobviousness pertaining to a later invention. The decision was viewed as a threatening broadening of the doctrine by many in the pharmaceutical industry, where the doctrine developed in litigation. 

    Last fall, the Supreme Court denied the petition for certiorari in the case. These two webinars will examine the impact of Acorda both within the pharma industry and without. The language of the decision leads some experts to believe the blocking patent doctrine enunciated in Acorda is applicable to any technology, and that the lengthy “Acorda factors” will soon join elder siblings like the Graham and Georgia-Pacific factors in patent lexicography. 

    Depending on how courts react, Acorda raises many issues for patent prosecutors, notably how to protect inventions that represent an incremental improvement over existing patents.

    On Thurs Feb. 20 the first part of this series, Blocking Patents in Litigation, will feature a panel with an in-house counsel at a global tech company and two veteran patent litigators. They will analyze whether Acorda is  a game changer in Hatch-Waxman litigation; whether the lesser role of secondary considerations will relegate Acorda to the sidelines in high tech patent litigation; and how the fact-specific inquiry required by Acorda will likely play out with discovery, expert testimony, and questions about the burden of proof.

    Speakers: 

    Elaine Blais, Goodwin Procter

    David Manspeizer, Squire Patton Boggs

    Frank Nuzzi, Siemens

  • Non-Patent Section 337 Litigation at the U.S. International Trade Commission (RECORDING)

    Contains 4 Component(s), Includes Credits

    In this webinar, the panelists will discuss the recent types of non-patent claims that have or could be brought at the ITC, how Section 337 proceedings differ when non-patent claims are raised, and address the recent uptick in certain types of non-patent ITC proceedings.

    The U.S. International Trade Commission, a quasi-judicial federal agency located in Washington, D.C., is responsible for enforcing 19 U.S.C. § 1337.  Section 337 is a trade statute designed to protect U.S. industries from injuries caused by the importation of goods connected to unfair acts.  Section 337 investigations have an abbreviated timeline, spanning approximately 18 months from filing to final decision in many cases. The ITC cannot impose monetary damages, but it can issue a powerful remedy called an exclusion order.


    An exclusion order is effectively an injunction barring a company from importing its products into the U.S. market which is enforced by U.S. Customs and  Border Protection. Due to its speed and powerful remedy, the ITC has become a forum of choice for many patent owners bringing infringement claims.  But although most Section 337 investigations are based on patent infringement allegations, the ITC has sweeping authority to investigate just about any other unlawful or unethical business practice involving the importation of goods into the United States. Recently, the ITC has seen an increase in such non-patent claims, including those relating to false advertising, trade secret misappropriation, and even asserted violations of the Food, Drug, and Cosmetic Act.


    In this webinar, panelists will discuss the types of non-patent claims that have been brought recently or could be brought at the ITC, how Section 337 proceedings differ when non-patent claims are raised, and the recent uptick in certain types of non-patent ITC proceedings.

    Speakers: 

    Matt McDonell, Zimmer Biomet

    Kecia Reynolds, Pillsbury Winthrop Shaw Pittman LLP

    Matt Rizzolo, Ropes and Gray LLP

    Matt McDonell

    Zimmer Biomet

    Matt McDonell is senior patent counsel at Zimmer Biomet, a global leader in musculoskeletal healthcare headquartered in Warsaw, Indiana.  Matt supports internal clients in the business units of Computer Assisted Surgery, Robotics, Personalized Solutions, Connected Health, and Bone Cement on all aspects of intellectual property law.  Matt has recently co-led Zimmer Biomet’s efforts in U.S. federal patent litigation relating to fluid waste management systems and in Section 337 investigations before the U.S. International Trade Commission relating to the importation of bone cements.  Prior to joining Zimmer Biomet in 2016, Matt was an associate in the IP Litigation group of Ropes & Gray, based in Chicago, Illinois.

    Kecia Reynolds

    Pillsbury Winthrop Shaw Pittman LLP

    Kecia J. Reynolds is a partner in Pillsbury’s Intellectual Property Litigation practice, and the leader of the Section 337 International Trade Commission Litigation practice.  Kecia is a first-chair litigator in trade related IP infringement and unfair competition disputes.  Kecia has litigated more than 60 cases before the ITC.  Kecia also litigates before the Patent Trial and Appeal Board and district courts.  Kecia represents U.S. and foreign manufacturers, suppliers, and retailers of consumer products, medical devices, and telecommunications equipment.  

    Matt Rizzolo

    Ropes & Gray LLP

    Matt Rizzolo is a partner at Ropes & Gray in Washington, D.C. He is a litigator who works extensively with technology companies to both enforce clients’ intellectual property rights and defend clients from infringement claims. Matt has significant experience litigating patent cases in a variety of jurisdictions, including federal district courts throughout the United States, the Court of Federal Claims, and in Section 337 actions before the U.S. International Trade Commission. His practice encompasses all facets of litigation, from pre-suit investigation through trial, post-trial proceedings, and appeals. He has additional experience in drafting and negotiating patent and technology licensing agreements. 

  • A New Day at the PTAB? Using the New Pilot Program for Motions to Amend and the Clarification on Reissue and Re-exam (RECORDING)

    Contains 7 Component(s), Includes Credits Recorded On: 02/06/2020

    This webinar will analyze two recent developments that could provide a boost to patent owners whose patents are threatened by AIA proceedings at the PTAB.

    This webinar will analyze two recent developments that could provide a boost to patent owners whose patents are threatened by AIA proceedings at the PTAB: the ongoing pilot program for motions to amend that was implemented in March 2019; and the USPTO’s clarification of how patent owners can use reissue and reexamination proceedings to amend patents during or even after an AIA review.

    Panelists include a litigator who will share his first-hand experience of the new pilot, another experienced PTAB litigator, and an in-house lawyer at a pharma company that succeeded in amending claims after the October 2017 en banc Federal Circuit decision in Aqua Products Inc. The panel will discuss:

    • the experience of parties in the first proceedings filed under the amendment pilot program. In early February, right before the webinar, the PTAB will hold the final oral hearing in Mylan v. Sanofi, the first filed under the new program.
    • the USPTO guidance about reissue and re-exam, a reminder that the PTAB is not the only place to amend a patent. The time to completion for both traditional USPTO proceedings has shrunk because the case load of the Central Re-exam Unit has fallen with the growth of the PTAB’s.


    Speakers: 

    Dean Garner, Johnson & Johnson

    Josh Griswold, Fish & Richardson, PC

    Justin Krieger, Kilpatrick Townsend & Stockton LLP


    Dean Garner

    Johnson & Johnson

    Dean Garner is assistant general counsel – patents at Johnson & Johnson. Among his responsibilities is the management of ongoing patent litigation and IPR’s for Ethicon (a J&J business unit). In one such case in December, the PTAB allowed Ethicon to amend one of its patents on a surgical stapler following a challenge from Intuitive, who argued the patent’s original claims were invalid. Dean is a member of IPO’s Asian Practice Committee.

    Josh Griswold

    Fish & Richardson, PC

    Josh Griswold is a principal in the Dallas office of Fish & Richardson. He is a core member of the firm’s active Patent Post-Grant Practice Group, and is involved with proceedings filed under the USPTO’s new pilot program for motions-to-amend practice in AIA trials. He also helps clients to develop worldwide patent portfolios that effectively exclude competitors and can be monetized through licensing and enforcement. 

    Justin Krieger

    Kilpatrick Townsend & Stockton, LLP

    Justin Krieger is a patent lawyer and the managing partner of the Denver office of Kilpatrick Townsend. He is a first chair inter partes review (IPR) and post-grant review (PGR) litigator with a successful track record of challenging third-party patents as well as defending against patent challenges at the PTAB. Justin also leads a patent prosecution team for clients in the fields of industrial chemistry and pharmaceuticals.

  • Text and Data Mining Laws: International Developments (RECORDING)

    Contains 6 Component(s), Includes Credits Recorded On: 01/23/2020

    Text and data mining (TDM) is an essential analytical tool used to generate robust and varied data sets that underpin machine learning. Many current and future developments in artificial intelligence depend on TDM.

    Text and data mining (TDM) is an essential analytical tool used to generate robust and varied data sets that underpin machine learning. Many current and future developments in artificial intelligence depend on TDM.  

    But what rights do miners have to use data that belongs to others? This is a complex and rapidly changing area of the law. Our panel will discuss:
    • The many aspects of law that govern TDM in the U.S., including copyright, the Computer Fraud and Abuse Act, contract law, and state law claims such as criminal trespass and unjust enrichment 
    • Basic relevant differences between EU and U.S. copyright law, including the difference between “fair dealing” and “fair use”
    • The importance of the EU Database Directive and the recently approved EU Directive on Copyright, which includes specific provisions on TDM
    • The relevant legal landscape in Japan and China
    • A roadmap for how in-house counsel should approach due diligence on TDM issues

    Speakers: 

    • Aaron Charfoos, Jones Day
    • Professor Bernt Hugenholtz, University of Amsterdam
    • Gail Zarick, IBM 

    Aaron Charfoos

    Jones Day

    Aaron Charfoos is a partner at Jones Day. He is an accomplished cybersecurity, privacy, and data protection trial lawyer.  He also helps companies in numerous industries (health care, financial services, technology, and consumer products) to develop global privacy and data security programs.

    Prof. Bernt Hugenholtz

    University of Amsterdam

    Bernt Hugenholtz is Professor of IP Law at the University of Amsterdam, Institute for Information Law (IViR). He is an expert in the field of international and European copyright law, and is the co-author, with Professor Paul Goldstein (Stanford University), of International Copyright. Principles, Law, and Practice.

    Gail Zarick

    IBM

    Gail Zarick is IBM’s Counsel for Regulatory Compliance, Source Code and Data Security. She has served in a number of IP law roles for IBM, most recently as the IP Counsel for IBM’s Security Division. She has also managed teams of IP attorneys in support of various IBM business units and research labs, negotiated IP licenses and patent assignment agreements, managed patent litigations, and managed due diligence efforts for patent sales.

  • Anti-suit Injunctions and the Future of FRAND Litigation (RECORDING)

    Contains 8 Component(s), Includes Credits

    This webinar will explore the challenge posed by international technology markets to national dispute resolution systems. Such markets are global, but the power of national courts to exercise authority over participants is normally defined by national patent law.

    This webinar will explore the challenge posed by international technology markets to national dispute resolution systems. Such markets are global, but the power of national courts to exercise authority over participants is normally defined by national patent law. Confronting this paradox, some courts in the U.S. and the U.K. have sought to establish global FRAND royalty rates for parties engaged in national patent litigation. At the same time, use of the international anti-suit injunction (which can be used to prevent enforcement of foreign injunctions or even to prevent parties from bringing suit in other countries) is increasing. U.S. court decisions have issued injunctions relating to proceedings in Germany, the U.K., China and other countries.

    Our panel will discuss:

    • The factors that lead U.S. courts to grant anti-suit injunctions, such as in Huawei v. Samsung (N.D. California), and factors favoring denial, such as in Optis v. Huawei (E.D. Texas), plus tactics for litigators on both sides of the issue

    • A recent upping of the game with the birth in Germany of the “anti-anti-suit” injunction, which forced German auto supplier Continental to partially drop its motion for anti-suit injunction in ongoing litigation in the Northern District of California       

    • The impact of recent events, such as the Federal Circuit decision that SEP holders can be entitled to jury trials to determine certain aspects of FRAND, on the future of global licensing determinations


    Speakers:

    Prof. Jorge Contreras, University of Utah

    John Gibson, Crowell & Moring

    Thomas Schachl, Wallinger Ricker Schlotter Tostmann

    Jorge Contreras

    University of Utah School of Law

    is a professor of law at the University of Utah. His research focuses on IP and innovation and the development of technical standards. He is a member of the IP Rights Policy Committee of the American National Standards Institute (ANSI), among other non-academic posts, and he was previously a partner at Wilmer Hale. He recently co-edited the book Patent Pledges: Global Perspectives on Patent Law's Private Ordering Frontier. 

    John S. Gibson

    Crowell & Moring

    is a litigator and partner at Crowell & Moring who has won numerous IP, antitrust, and commercial cases. John recently won summary judgment for Ericsson in the Central District of California, defeating a unfair competition law claim in precedent-setting antitrust and contract litigation to determine FRAND (fair, reasonable, and non-discriminatory) licensing terms for a worldwide portfolio of standard essential mobile telecommunications patents. Also, he helped win a verdict that Ericsson did not breach its FRAND licensing obligations.

    Thomas Schachl

    Wallinger Ricker Schlotter Tostmann

    is a partner at Wallinger Ricker Schlotter Tostmann in Munich. His main focus is conducting patent infringement proceedings before German courts as well as strategic counselling and coordination of international pending parallel patent infringement and nullity proceedings. He also advises on the enforcement of damages claims for infringement of intellectual property rights.  He is also experienced in negotiation and drafting of license, settlement, and confidentiality agreements.

  • Identifying the Trade Secrets During Litigation (RECORDING)

    Contains 7 Component(s), Includes Credits

    In this IPO Chat Channel session, the panel will discuss considerations underlying trade secret identification for U.S. trade secret litigation. The panel will discuss litigation and legislative trends concerning the timing and scope of the trade secret identification, looking at cases brought under state law as well as under the Defend Trade Secret Act of 2016.

    A central part of any litigation alleging trade secret misuse is identification of the trade secrets claimed to be at issue.  Unlike other areas of intellectual property law where rights are defined by a single document prior to a dispute, trade secrets are often not defined until litigation.  Defining the trade secrets is a challenging issue for the parties and for the courts, who may need to guide discovery into trade secret claims and fashion or approve appropriate relief if misappropriation is shown.  How and when the trade secrets are identified can have a dramatic impact on the progress and outcome of the case.  

    A plaintiff may face competing tensions.  Often the plaintiff may not have full information at the outset of litigation about what trade secrets the defendant appears to have misappropriated or is misappropriating.  The plaintiff may not want to be too specific in defining its trade secrets for fear of overlooking information it is unaware defendant has placed at risk.  However, plaintiffs may also fear that if they are over-expansive in defining their trade secrets, they may reveal information that defendant does not yet know, in which case the litigation itself could expand defendant’s knowledge of the plaintiff’s trade secrets.  Many plaintiffs would rather delay the identification to the later stages of the litigation after learning more about the defendant’s acts.  By contrast, most defendants would like an early definition of the trade secrets with as much specificity as possible so they know how to defend themselves.  The information claimed to be at issue may not qualify to be a trade secret at all, the defendant may never have seen it, or the defendant may have its own trade secrets to protect from intrusive discovery.  

    In this IPO Chat Channel session, the panel will discuss considerations underlying trade secret identification for U.S. trade secret litigation.  The panel will discuss litigation and legislative trends concerning the timing and scope of the trade secret identification, looking at cases brought under state law as well as under the Defend Trade Secret Act of 2016.  

    Speakers:

    Ken Corsello (IBM)

    Victoria Cundiff (Paul Hastings)

    Eric Fues (Finnegan)

    Kenneth Corsello

    IBM

    Ken Corsello is an IP law counsel at IBM. He currently focuses on drafting and negotiating IP licenses and assignment agreements. During his 14 years at IBM, he has worked on patent procurement, litigation, client counseling, product clearance, and IP transactional matters. Before joining IBM, Ken was a law clerk to Chief Judge Glenn Archer at the Federal Circuit; an Associate Solicitor in the USPTO; and in private practice at law firms in Washington, D.C. Ken has been the chair of IPO’s Trade Secrets Committee since 2016. His recent speaking activity on trade secret issues includes testifying in 2018 as a witness on behalf of IPO at a hearing on “Safeguarding Trade Secrets in the United States” held by the U.S. House Committee on the Judiciary, Subcommittee on Courts, Intellectual Property, and the Internet.  

    Victoria Cundiff

    Paul Hastings LLP

    Victoria Cundiff is a partner at Paul Hastings in New York. She is a leader of the Firm’s nationally ranked global trade secrets litigation practice, which is ranked in “Tier 1” by Legal 500. She has been named a “Leading Lawyer” nationally in the field by Legal 500 and has litigated trade secret and related cases throughout the United States and as a member of cross-border teams. She has designed confidential verification protocols for resolving intellectual property use and ownership disputes in and outside of court and advises on lawful competitive intelligence gathering. Vicki is a Visiting Lecturer in Law at Yale Law School, where she teaches intellectual property law, and at the University of Pennsylvania Law School, where she teaches trade secrets law.

    Eric Fues

    Finnegan

    Eric Fues is a partner in Finnegan, Henderson, Farabow, Garrett & Dunner, LLP’s Washington, D.C. office. He represents clients in domestic and international technology disputes, including patent and trade secret litigation at trial and appellate levels. Eric has been involved in more than 50 district court matters and U.S. International Trade Commission (ITC) investigations. Eric’s practice also includes client counseling. He has been recognized by The Legal 500 U.S. for trade secrets work, and by Intellectual Asset Management as a leading patent litigator in the D.C. area and for his ITC practice. Eric previously served as president of the ITC Trial Lawyers Association, and as leader of Finnegan’s chemical and metallurgical practice group. 

  • Patent Case Law Year in Review (RECORDING)

    Contains 4 Component(s), Includes Credits

    This webinar will provide a roundup of this year’s most significant patent cases.

    This webinar will provide a roundup of this year’s most significant patent cases. Over the past year, the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit have authored a number of opinions re-shaping patent law, including Helsinn v. Teva, Return Mail v. US Postal Service, and numerous others involving issues such as UPSTO inter partes review decisions and patent eligibility under 35 U.S.C. § 101. Our panelists, both vice-chairs of IPO's Amicus Brief Committee, will provide key takeaways from these decisions and comment on patent cases to watch in the coming year.


    Speakers:

    Paul Berghoff (McDonnell Boehnen Hulbert Berghoff, LLP)

    Gregory Castanias (Jones Day)

    Moderator:

    Samantha Aguayo (Intellectual Property Owners Association)

    Paul Berghoff

    McDonnell Boehnen Hulbert & Berghoff LLP

    Paul Berghoff, founder of McDonnell Boehnen Hulbtert  Berghoff LLP, has three decades of experience as lead trial counsel in complex patent litigation – both jury and bench trials and PTAB proceedings – concentrating in litigation involving pharmaceuticals, medical devices, biotechnology, electronics, and software. He has successfully tried scores of patent cases and has successfully argued dozens of times before he US Court of Appeals for the Federal Circuit. He services as Chair of the firm’s Litigation & Appeals Practice Group.  He is Vice-Chair of IPO’s Amicus Brief Committee.

    Gregory Castanias

    Jones Day

    Greg Castanias is a partner at Jones Day in Washington, DC. He is head of the firm’s Federal Circuit team and has almost 30 years’ experience as a leading appellate and intellectual property litigator. His experience includes five US Supreme Court arguments, 70+ Federal Circuit arguments, and countless others in federal and state courts across the nation, from Alaska to Connecticut. His intellectual property experience includes such diverse technologies as genetics, diagnostics, pharmaceuticals, chemistry, electronics, and mechanical fields, as well as copyright, trademark, and trade secret disputes. He is Vice-Chair of IPO’s Amicus Brief Committee.

  • Blockchain as an IP Tool (RECORDING)

    Contains 5 Component(s), Includes Credits

    Despite the constant buzz about artificial intelligence, many commentators predict that blockchain will drive the next wave of legal innovation. This webinar will discuss new possibilities for the use of blockchain in the IP arena and the services that are already available from a bevy of start-ups and other providers.

    Despite the constant buzz about artificial intelligence, many commentators predict that blockchain will drive the next wave of legal innovation. This webinar will discuss new possibilities for the use of blockchain in the IP arena and the services that are already available from a bevy of start-ups and other providers.  

    Blockchain is a distributed ledger or database running on multiple devices and open to anyone, where not just information but anything of value can be moved and stored securely and privately. Though products are still in the early stages, blockchain could provide solutions for the IP industry in areas such as: 

    Evidence of creatorship – Individuals and companies could identify their innovation and place it on record within a blockchain. Evidentiary issues around who was the first to create an idea could then be solved through the blockchain’s timestamp.  

    Ownership and assignment -- Blockchain technology could provide clear and accurate ownership records of IP assets. License agreements could even be created and recorded through smart contracts via the blockchain itself, providing an accurate and up-to-date ledger. 

    Anti-Counterfeiting Measures – Blockchain could assist in the authentication and identification of origin in the detection and retrieval of counterfeit, stolen, and parallel-imported goods.  


    Speakers:

    VIncent Fitzsimmons, IPwe

    Maurice Pirio, Perkins Coie

    Dan Staudt, Siemens

    Vincent Fitzsimmons

    IPwe, Inc.

    Vincent Fitzsimmons is the chief operating officer of IPwe. IPwe, which is a participant in IBM’s Blockchain Accelerator, is creating a global patent registry to make patent transactions quicker and cheaper. Vince joined IPWe last year from CPA Global, in the IP Management space, where he spent seven years driving global sales and operations. 

    Maurice Pirio

    Perkins Coie

    Maurice Pirio is a partner at Perkins Coie. A veteran software patent prosecutor and strategist, Maurice has recently focused his practice on blockchain technologies such as bitcoin, distributed ledgers, smart contracts, and machine learning technologies. He has also has successfully handled well over 50 appeals before the PTAB. 

    Dan Staudt (Moderator)

    Siemens Corp.

    Daniel Staudt is Vice President and Chief IP Counsel of the Siemens Corporation IP Department. Dan is responsible for all IP legal matters for the Siemens North American Operating Companies including its digital industries, smart infrastructure, and energy businesses. Dan is vice president of IPO, and a member of its board and executive committee. He has been practicing IP law for almost 30 years. 

  • Patent Eligibility: USPTO's Latest Guidelines for Information Technology (RECORDING)

    Contains 5 Component(s), Includes Credits

    Last month the U.S. Patent and Trademark Office released an update to its January 2019 Subject Matter Eligibility Guidance. Unlike the January Guidance, which represented a significant change in how the USPTO applies § 101 in examination and PTAB proceedings, this update is primarily an effort to clarify issues brought up by public comments on the January Guidance and focuses on clarifying practice for patent examiners.

    Last month the U.S. Patent and Trademark Office released an update to its January 2019 Subject Matter Eligibility Guidance. Unlike the January Guidance, which represented a significant change in how the USPTO applies § 101 in examination and PTAB proceedings, this update is primarily an effort to clarify issues brought up by public comments on the January Guidance and focuses on clarifying practice for patent examiners.

    The panel features a USPTO official, an in-house counsel involved in computer cloud software and services, and a prosecutor specializing in computer and software technologies. The program offers attendees an opportunity to get answers to their questions on the guidance. 

    Each theme in the guidance will be addressed:
    • Evaluating whether a claim recites a judicial exception;
    • The groupings of abstract ideas enumerated in the 2019 PEG;
    • Evaluating whether a judicial exception is integrated into a practical application;
    • The prima facie case and the role of evidence with respect to eligibility rejections; and
    • The application of the 2019 PEG in the patent examining corps.
    Many practitioners find that the majority of § 101 disputes with the USPTO examiners or PTAB turns on whether the claimed invention integrates a judicial exception into a practical application. Our panelists will discuss in detail what help the new guidance does and doesn’t provide in this regard. The private sector panelists also will discuss the practical implications of the gap between USPTO guidance and Federal Circuit case law. 

    Speakers:

    Michael Borella, McDonnell Boehnen Hulbert & Berghoff 

    Matthew Sked, USPTO

    Mark Vallone, IBM

    Michael Borella

    McDonnell Boehnen Hulbert & Berghoff LLP

    Michael Borella is a partner with McDonnell Boehnen Hulbert & Berghoff and serves as chair of its Software & Business Methods Practice Group. Mike has drafted or been involved in the prosecution of hundreds of patents in the U.S., as well as in other jurisdictions. Prior to joining MBHB, Mike served on the management teams of Fastmobile, UTStarcom, and 3Com.

    Matthew Sked

    USPTO

    Matt Sked is a Senior Legal Policy Advisor at the USPTO. He has played a role in the formulation the agency’s patent eligibility guidance for the past 5 years. Earlier he worked as a patent examiner in the electronic arts.  

    Mark Vallone

    IBM

    Mark Vallone is lead IP Counsel for IBM’s Cloud Platform. He is responsible for managing the patent procurement team in support of IBM Cloud, IBM Services, and Global Markets. Earlier he was in private practice and worked as a software engineer at IBM.